Ex Parte PERRIN et al

Patent Trial and Appeal Board

Aug 28, 2018

14737070 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/737,070 06/11/2015 Thomas M. PERRIN
101562 7590 08/30/2018
GARDNER GROFF GREENWALD & VILLANUEVA, PC
2018 POWERS FERRY ROAD
SUITE 800
ATLANTA, GA 30339
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2K08.l-233 7495
EXAMINER
NGUYEN, CHI Q
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
08/30/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent@gardnergroff.com
kidsiilegal@kidsii.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS M. PERRIN and STEPHEN R. BURNS
Appeal 2017-011374
Application 14/737,070
Technology Center 3600
Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1-75. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM and designate our affirmance of claims 1-74 under 35
U.S.C. § 103 as a NEW GROUND OF REJECTION, pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 As Applicant, Appellants state that the real party in interest is Kids II, Inc.
Appeal Br. 2.
2 Appeal is taken from the Final Office Action dated October 5, 2016.
Appeal 2017-011374
Application 14/737,070
STATEMENT OF THE CASE
Claims 1, 42, and 75, the independent claims on appeal, reproduced
below, are exemplary of the subject matter on appeal.
1. A child supporting device comprising:
a support frame defining a periphery within which the
support frame rests on a supporting surface, the support frame
periphery having a length L and a width W; and
a child resting portion supported by the support frame at a
height H above the supporting surface;
wherein a length-to-width aspect ratio (L / W) of the
support frame periphery is between about 0.8 to about 2.2.
42. A child supporting device comprising:
a support frame defining a periphery within which the
support frame rests on a supporting surface, the support frame
periphery having a length between about 19" to about 31" and a
width of between about 14" and 23"; and
a child resting portion supported by the support frame at a
height of about 21" to about 36" above the supporting surface.
7 5. A child supporting device for positioning on a support
surface and nearby a standard sofa or dining table, the device
compnsmg:
a support frame defining a periphery within which the
support frame rests on the supporting surface; and
a child resting portion supported by the support frame at a
height above the supporting surface of about 21" to about 36"
above the supporting surface, wherein a child supported on the
child resting portion is within about 12" to 36" of an adult seated
on the standard sofa when the child supporting device is
positioned adjacent the sofa, and wherein a line of sight between
a child supported therein and an adult seated at the standard
dining table about 40" - 60" from the child supporting device is
between about OQ - 30Q relative to horizontal.
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Application 14/737,070
THE REJECTIONS
I. Claims 1-75 stand rejected on the ground of non-statutory
obviousness-type double patenting as unpatentable over "claims 1-34 of
copending Application No. 14/453,209," which application has issued to
Perrin et al. on September 12, 2017 as U.S. Patent 9,756,962 B2 (hereinafter
"Perrin").
II. Claims 1-75 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lopes et al. (US 2005/0241064 Al; published on Nov. 3,
2005) (hereinafter "Lopes").
ANALYSIS
Rejection I
The Examiner determines that claims 1-75 are unpatentable over the
claims of Perrin on the ground of non-statutory obviousness-type double
patenting. Appellants submit that a terminal disclaimer will be filed to
address this rejection. See Appeal Br. 4, fu 2. Accordingly, we summarily
sustain the rejection of claims 1-75 as unpatentable over the claims of Perrin
on the ground of non-statutory obviousness-type double patenting.
Rejection fl
Independent claiJn 1 and dependent claiJns 2----41
Appellants argue claims 1-41 as a group. Appeal Br. 5. We select
independent claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 2-41 stand or fall with claim 1.
Regarding independent claim 1, the Examiner finds, inter alia, that
Lopes discloses a child supporting device (i.e., infant care apparatus l)
comprising a suppmi frame (i.e., changing table frame 12) defining a
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Application 14/737,070
periphery within which the support frame rests on a supporting surface, the
support frame periphery having a length and a width, and a child resting
pmiion (i.e., removable caffier 8) supported by the support frame at a height
H above the supporting surface, as claimed. Final Act. 3 ( citing Lopes ,r 63,
Figs. 1A-2B). The Examiner determines that although Lopes does not
disclose a length-to-width aspect ratio of the support frame periphery
between about 0.8 to about 2.2, as claimed, it would have been obvious "to
have different aspect ratios of length to width ... to provide a comfort size
for an infant ... , since it has been held that discovering an optimum value
of a result effective variable involves only routine skill in the art." Id. at 3-4
( citation omitted); see also Ans. 2-3.
Appellants argue that the Examiner's reasoning is "conclusory,"
noting that "the purpose of [the] claimed length-to-width aspect ratio of the
frame does not even re late to 'comfort size for an infant."' Appeal Br. 5;
Reply Br. 2. Appellants also argue that the claimed aspect ratio is not a
result-effective variable subject to routine optimization, "because the
claimed features are not directed to a result that is identified by the Lopes
reference or otherwise known to have been sought previously in the field of
children's furniture or accessories." Appeal Br. 7; Reply Br. 2.
"[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). As the
facts of Aller illustrate, this rule may apply even where the prior art does not
disclose either an example falling within the recited range, or a range
overlapping or touching the recited range. One exception to this rule is that
the discovery of the optimum or workable range of a variable will not be
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Application 14/737,070
deemed to have been obvious unless the variable was known to be "result-
effective." See In re Antonie, 559 F.2d 618, 620 (CCPA 1977). The proof
required to find that a variable was known to be "result-effective" is not
high: "In cases in which the disclosure in the prior art was insufficient to
find a variable result-effective, there was essentially no disclosure of the
relationship between the variable and the result in the prior art." In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). The
Examiner bears the burden of proving a sufficient factual underpinning to
support the conclusion that the subject matter of the appealed claims would
have been obvious. On the other hand, the Appellants bear the burden of
proving that the recited ranges are critical, so as to fall within the exception
to the rule of Aller. See Aller at 456; see also In re Dillon, 919 F.2d 688,
692 (Fed. Cir. 1990) (en bane) (The Appellant bears the burden of proving
unexpected results in order to overcome a prima facie case of obviousness).
As set forth supra, claim I requires the support frame to define a
periphery within which the support frame rests on a suppmiing surface (i.e.,
a ground surface), wherein the length-to-width aspect ratio of the support
frame periphery is within a claimed range. See. e.g., Spec.,, 12, 25, Fig. 2).
In other words, the length-to-width aspect ratio represents the square or
rectangular footprint of the support frame resting on the floor. We cannot
find a disclosure in the Specification that explains why selecting the claimed
length-to-width aspect ratio range of between about 0.8 to about 2.2 is
critical or provides unexpected results. The Specification more generally
explains that the invention "is optimized for access to and interaction with
the infant or child by a parent or caregiver." Spec. , 2 (emphasis added).
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Notwithstanding, we agree with Appellants that Lopes is silent
regarding whether the length-to-width aspect ratio of the rectangular
periphery of frame 12, within which frame 12 rests on the floor, is
recognized as a result-effective variable, and therefore, the Examiner's
rejection lacks sufficient factual underpinning to support a conclusion of
obvious. However, we find that Goldberg3 is evidence that it was well
known at the time of Appellants' invention that the length-to-width aspect
ratio of leg members defining a rectangular periphery within which a frame
rests on the floor is a variable that affects the resulting stability of the device,
in the art of child supporting devices. See Goldberg 2:65-67 ("the leg
members are well spread out to insure that the center of gravity will remain
within the area defined by the legs"). Thus, we are not apprised of error in
the Examiner's findings and reasoning that clairn 1 is obvious in view of
Lopes. lv1oreover, Appellants have not provided any argument or evidence
that the claimed range of the length-to-width aspect ratio of the support
frame periphery is critical or provides new and unexpected results.
Accordingly, we sustain the Examiner's rejection of independent
claim l and claims 2-41 fall therewith. Because we rely on evidence that is
not relied on by the Examiner (i.e., Goldberg), we designate our affinnance
as a NE\V GROUND OF REJECTION to give Appellants a fair opportunity
to respond.
3 US 3,759,539 (issued Sept. 18, 1973), a reference cited by the Examiner in
the Notice of References Cited on July 9, 2015.
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Application 14/737,070
Rejection JI
Independent claim 42 and dependent clairns 43----74
Appellants argue claims 42-74 as a group. Appeal Br. 5. We select
independent claim 42 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 43-74 stand or fall with claim 42.
Regarding independent claim 42, the Examiner finds, inter alia, that
Lopes discloses a child supporting device (i.e., infant care apparatus l)
comprising a support frame (i.e., changing table frame 12) defining a
periphery within which the support frame rests on a suppmiing surface, the
support frame periphe1y having a length and a width, and a child resting
portion (i.e., removable carrier 8) supported by the support frame at a height
H above the supporting surface, as claimed. Final Act 6. The Examiner
reasons that although Lopes does not disclose a specific length and width for
the periphery within which Lopes' frame 12 rests on the floor, or that Lopes'
removable carrier 8 is supported by frame 12 at a specific height, it would
have been obvious "to have different heights [ and] aspect ratios of length to
width ... to provide a comfort size for an infant and ... to accommodate
caregiver height, since it has been held that discovering an optimum value of
a result effective variable involves only routine skill in the art." Id. at 7
(citation omitted). In support, the Examiner finds that Lopes discloses that
infant care apparatus 1 has ''legs [that] are adjustable ... for adjusting the
height in order to accommodate different caregiver heights." Ans. 3 (citing
Lopes Figs. 2A, 2B).
Appellants argue that the Examiner's reasoning is conclusory because
the Examiner fails to provide evidence that the clairned length and width of
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Application 14/737,070
the periphery, and height of the child resting portion, are recognized in the
art as result-effective variables. Appeal Br. 5, 7; Reply Br. 3.
\Ve determine, as set fmih supra with respect to independent claim 1,
that Goldberg provides evidence that the length and width of the periphery
within which a support frame of a child supporting device rests on the floor
is recognized in the art of child supporting devices as a result-effective
variable. .Again, Appellants do not provide any argument or evidence that
the claimed ranges of the length and width of the support frame periphery
are critical or provide new and unexpected results.
We are also not apprised of error in the Examiner's reliance on Lopes
as evidence that the height of removable carrier 8 (which is placed on
changing table surface) relative to the floor is recognized in the art of child
supporting devices as a result-effective variable. See, e.g., Lopes 153
("[c]hanging table surface 16 is supported by changing table frame 12 and
arranged within aperture 14"); id. ir 66 ('"[r]emoval of the removable carrier
8 exposes the changing table surface"); id., Figs. 2A, 2B, 3A, 3B. Indeed,
Lopes discloses that "frame 12 includes means for adjusting the height 'h' of
the changing table surface 16 above the floor'' (id. 1 63) and that "[t]he
frarne enables both functions ( changing and sleeping) to be perforrned at a
comfortable height" (id.~· 30). Appellants do not provide any argument or
evidence that the claimed range of the height of the child resting portion
above the suppmiing surface is critical or provides new and unexpected
results. To the contrary, the Specification discloses that "the present
invention relates to an access-optimized infant support device ... whereby
the lower support frame maintains the seat ... at a height of about 21" to
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Application 14/737,070
about 36" above a support surface." Spec. ,r 9 ( emphasis added). Thus, we
are not apprised of effor in the Examiner's findings and reasoning.
Accordingly, we sustain the Examiner's rejection of independent
claim 42, and claims 43-74 fall therewith. Because we rely on evidence not
relied on by the Examiner (i.e., Goldberg), we designate our affirmance of
claims 42-74 under 35 U.S.C. § 103 as unpatentable over Lopes as a NE\V
GROUND OF REJECTION to allow AppeUants a fair opportunity to
respond.
Independent claim 75
Regarding independent claim 75, the Examiner finds, inter alia, that
Lopes discloses a child supporting device (i.e., infant care apparatus 1)
comprising a suppmi frame (i.e., changing table frame 12) defining a
periphery within which the support frame rests on a supporting surface, and
a child resting portion (i.e., removable cmTier 8) supported by the support
frame at a height H above the supporting surface, as claimed. The Examiner
determines that Lopes does not disclose that (i) Lopes' removable caffier 8
is supported by frame 12 at a specific height above the floor; (ii) a child
supported on removable carrier 8 is within about 12" to 36" of an adult
seated on a nearby standard sofa; and (iii) a line of sight between a chi1d
suppmied in the child supporting device and an adult seated at a nearby
standard dining table about 40" ---- 60" from the child supporting device is
between about 09 ---- 30q relative to horizontal. Id. at 8. The Examiner
reasons that "[t]hese limitations [are] functional limitations or intended of
use of the device since these limitations are not positively combined and
claimed." Id.
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Application 14/737,070
Appellants con-ectly argue that the claimed height of the child resting
portion supported by the support frame is "positively recited." Appeal Br. 6.
However, for the reasons stated supra with respect to independent claim 42,
we determine that the claimed height limitation represents optimization of an
art-recognized, result-effective variable.
Regarding the limitations reciting dimensions relative to a nearby
standard sofa or dining table, we agree with the Examiner that such
recitations are directed to the use of the child supporting device and
therefore, are not entitled to any patentable weight. Appellants have not
identified any structure of the claimed child supporting device that is
required to meet the distance limitation, as recited in the first wherein clause,
or to meet the line of sight limitations, as recited in the second wherein
clause.
Accordingly, we sustain the Examiner's rejection of independent
claim 75.
DECISION
The Examiner's decision rejecting claims 1-75 on the ground of non-
statutory obviousness-type double patenting is AFFIRMED.
The Examiner's decision rejecting claims 1-75 under 35 U.S.C. § 103
as unpatentable over Lopes is AFFIRMED, and we designate our affirmance
of claims 1-74 as a NEW GROUND OF REJECTION.
FINALITY OF DECISION
This decision contains new grounds of rejection as permitted under 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
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Application 14/737,070
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is
made which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the decision.
Should the examiner reject the claims, appellant may again
appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 4I.50(b)
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